From:

Subject
: Comments on Proposed
Rulemaking
on Changes to
I
mplement the Paten
t
Business Goals

These comments are submitted in response to the September
17, 1999 Notice of Proposed Rulemaking on Changes to Implement
the Patent Business Goals (64 Fed. Reg. 53772). Comments on
proposed rule changes will be presented in the order in which
the proposed changes appear in the Notice, but not all proposed
changes will be addressed.

The undersigned is a partner in
the New York intellectua
l
property law f
i
rm of Fish &
Neave.
However, the views expressed herein are solely those of the
undersigned, and do not necessarily reflect the views of Fish
and Neave.

The undersigned f
i
rst would like to repeat an observation made in commenting on
the Advance Notice. Specifically, the undersigned believes that
it is laudable for the Patent and Trademark Office
("PTO")
to attempt to adopt some of the efficiencies of the private
sector. However, the PTO is not a business, and patent
applicants are not "customers." A patent is not a
widget:
it is a legal right conferred by the gove
rn
ment as part of a legal bargain with an applicant. Accordingly,
it is
simplistic
to
analogize
the patent application process to a retail transaction.
Moreover, in its rush to emulate the private sector, the PTO
has adopted the worst of business school jargon. Business Goal
4 is the best (worst?) example of this jargon, which the
undersigned believes is meaningless. In addition, there is no
reason to substitute such jargon for perfectly wel
l
-understood existing terminology. In this case, the best
(worst?) example is the adoption of the term "cycle time"
– which implies a repetitive process that is
always the same, as in the mass production of
widgets
- for the traditional and well understood term "pendency."
Moreover, such jargon tends to change rapidly; "cycle time" may
have no recognized meaning in a relatively short time.

Tu
rn
ing now to specif
i
c rule changes, with respect to Section 1.9, the undersigned
would remind the PTO that the legal meaning of the word
"person" includes corporations. Although the rule adopts its
own def
i
nition, the undersigned believes that the use of the word
person is legally confusing. Either another word should be
used, or the modifier "natural" should be added.

With respect to drawings, although not specifically written
into any rule, the comments in the Notice state that formal
drawings filed after allowance should not be expected to catch
up with the application f
i
le in time for printing in the issued patent, and that patents
will issue with informal drawings. The problem as seen by the
undersigned is that in the undersigned's experience, when an
application is f
i
led with informal drawings, even if formal drawings are filed
promptly thereafter – e.g., as soon as the
Filing Receipt is received - the drawings are not properly
entered into the f
i
le. Either the drawings are not even matched with the file, or
they are placed in the file but not actually "entered" or
docketed, leading to a requirement for formal drawings in the
Notice of
Allowability.
The undersigned is conce
rn
ed that in its rush to reduce pendency, the PTO will issue
patents with informal drawings even though formal drawings had
been submitted early in the pendency of an application, but not
as part of the initial filing. Better procedures in the PTO are
needed to insure that formal drawings submitted after the
filing date are in fact entered and printed in the issued
patent. In addition - and this comment applies not only to
drawings but to all aspects of the proposed rulemaking that
relate to reducing pendency – the
undersigned does not believe that in its rush to reduce
pendency, the
PTO
should penalize applicants who are willing to accept somewhat
longer pendency to "get it right." Previous complaints
regarding lengthy pendency of applications has been directed to
delays caused by the PTO: no applicant has ever complained as a
result of se
l
f-imposed delays.

With regard to the changes in Information Disclosure
Statement ("IDS") practice, the undersigned does not object to
the requirement that copies of cited applications be provided.
However, the undersigned feels compelled to "keep the PTO
honest" by questioning the rationale behind the new
requirement. Specifica
l
ly, the Notice justi
fi
es the rule change by stating that requiring the PTO to make
copies of cited pending applications, as under current
practice, affects the prosecution of the cited application by
removing its f
i
le from the Examiner who is examining it for as long as is
needed to make the copies. However, the undersigned understands
that all applications are
microfilmed
and/or digitally imaged on filing. Insofar as the citation of
an application in an IDS is a citation of the specification and
drawings only, it should be possible for the PTO to provide
copies of a cited application to the Examiner of the citing
application from the microfilm or the stored digital image.
Indeed, if the cited application has been digitally imaged, the
Examiner of the citing application should be able to view it on
his/her computer without even having to obtain a paper
copy.

With respect to the IDSs filed after close of prosecution,
the PTO is proposing to raise the fee from the current $130
petition fee to the $240 fee charged for IDSs after the first
Office Action but before the close of prosecution. The stated
justification is that IDSs filed after close of prosecution are
at least as
disruptive,
if not more so, than IDSs filed after the first Office Action
but before the close of prosecution. The PTO appears to have
forgotten the reason for the lower fee in the first place.
There are two parallel considerations at work here. First, the
PTO has divided the pendency of an application into three
periods - the period before the first Office Action, the period
after the first Office Action but before the close of
prosecution, and the period after close of prosecution. Second,
the PTO has divided cited prior art into two categories - prior
art that the applicant has been aware of for at least three
months ("late prior art
"),
and prior art that the applicant has been aware of for three
months or less (
t
imely prior art
").
It is logical for applicants to be penalized for later prior
art, and that is what happens under current practice. Both late
and timely prior art are accepted without charge until the
first Office Action. Late prior art is accepted after a f
i
rst Off
i
ce Action on payment of a $240 fee, and is not accepted at all
after the close of prosecution. Timely prior art is justifiably
treated more leniently, and is accepted even after the first
Off
i
ce Action at no charge, and after close of prosecution at a
lower fee ($130). The PTO already fairly and justifiably bars
the citation of late prior art after the close of prosecution;
the PTO now proposes to penalize applicants for submitting
timely prior art, which by definition could not be submitted
sooner. This is unfair. The lower petition (or "processing")
fee should be retained.

The PTO is proposing changing the manner of amending claims
from the current system, which indicates the changes relative
to the previous version of the claim, to a system in which a
clean copy of the new claim text is submitted. A separate copy
of the claim, showing the amendment relative to the previous
version of the claim, will also be required. The justification
for this change is to make it easier to optically scan amended
claims for printing in the issued patent. The undersigned
respectfully submits that the PTO has got it reversed. The
clean copy of the claim should be presented on a separate sheet
and the claim presented within the reply/amendment document
should continue to be presented as under current practice, to
make it easier for both the Examiner, and those reviewing the
prosecution history later, to determine what changes were made.
Embedding the clean version of the claim in the reply/amendment
document would not only make it harder to determine what
changes were made, but also would make it harder to scan the
claim, as it would more likely extend over more than one page,
and the page being scanned would very likely also contain
non-claim text. If the goal is easier scanning of amended
claims, then it is the clean copy that should be provided on a
separate sheet.